Ex Parte SUGADownload PDFPatent Trial and Appeal BoardMar 14, 201613076556 (P.T.A.B. Mar. 14, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/076,556 03/31/2011 23911 7590 03/16/2016 CROWELL & MORING LLP INTELLECTUAL PROPERTY GROUP P.O. BOX 14300 WASHINGTON, DC 20044-4300 FIRST NAMED INVENTOR AtsuoSUGA UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www .uspto.gov ATTORNEY DOCKET NO. CONFIRMATION NO. 107008.63496US 3971 EXAMINER NEDIALKOV A, LILIA V ART UNIT PAPER NUMBER 1724 NOTIFICATION DATE DELIVERY MODE 03/16/2016 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): edocket@crowell.com tche@crowell.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ATSUO SUGA Appeal No. 2014-008041 Application 13/076,556 Technology Center 1700 Before BEYERL YA. FRANKLIN, GEORGE C. BEST, and MONTE T. SQUIRE, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL Appellant seeks our review under 35 U.S.C. § 134 of the Examiner's decision rejecting claims 1-7. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). STATEMENT OF THE CASE Claim 1 is illustrative of Appellant's subject matter on appeal and is set forth below (with text in bold for emphasis): 1. A liquid-cooled storage battery system comprising: a secondary battery; Appeal2014-008041 Application 13/076,556 a holding member compnsmg a flow channel of a cooling medium for cooling the secondary battery, which holds the secondary battery; a cooling medium temperature measuring unit that measures temperatures T 1 and T2 of the cooling medium at two locations in the flow channel; a battery temperature measuring unit that measures a temperature T3 of the secondary battery; and a judging unit that repetitively calculates a coefficient a to detect a change of thermal conductive properties of members arranged between the secondary battery and the cooling medium so that a cooling performance of the secondary battery based on a variation of the coefficient a is judgeable, the coefficient a being defined as (T3 - Tl)/(T2 - Tl), (T3 - T2)/(T2 - Tl), or (T3 - T2)/(T3 - Tl); wherein the flow channel and the holding member are formed of a metal and the flow channel penetrates the inside of the holding member. The Examiner relies on the follo\x1ing prior art references as evidence of unpatentability: Eiji 1 Zhu Wegner Bitsche JP 10-106638 US 2008/0233470 Al US 7,531,269 B2 US 2009/0220850 Al THE REJECTIONS Apr. 24, 1998 Sep.25,2008 May 12, 2009 Sep.3,2009 1. Claim 7 is rejected under 35 U.S.C. § l 12(b) or 35 U.S.C. § 112 (pre- AIA), second paragraph, as being indefinite. 1 The Examiner refers to this reference as "Kadouchi" (the first name of the inventor). In the remainder of this opinion, we shall do the same to avoid any confusion. 2 Appeal2014-008041 Application 13/076,556 2. Claims 1-6 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Kadouchi (the Examiner relies on a machine translation of Kadouchi, provided with the non-final office action mailed June 20, 2013), in view of Wegner and further in view of Bitsche. 3. Claim 7 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Kadouchi, in view of Wegner and further in view of Bitsche as applied to claim 6 above, and further in view of Zhu. ANALYSIS Rejection 1 We agree with the Examiner that there is no antecedent basis for the claimed phrase "the cooling system" at line 3 of claim 7 (Ans. 2-3), and affirm Rejection 1. 2 Rejections 2 and 3 A.ppellant argues, inter alia, that the applied art, and in particular, the primary reference of Kadouchi, does not suggest the claimed subject matter, particularly with regard to the aspect of claim 1 pertaining to "a judging unit that repetitively calculates a coefficient a to detect a change of thermal conductive properties of members arranged between the secondary battery and the cooling medium so that a cooling performance of the secondary battery based on a variation of the coefficient a is judgeable". Appellants 2 We note that Appellant filed an after-final amendment on February 18, 2014 in an effort to correct claim 7 in this regard. The Examiner did not enter this amendment according to the Reply after Final mailed by the Examiner on March 11, 2014. Hence, the status of claim 7 as provided in the Claims Appendix of Appellant's Appeal Brief is not correct. Appellant does not address Rejection 1 in the Appeal Brief or Reply Brief. 3 Appeal2014-008041 Application 13/076,556 explain that Kadouchi does not disclose the relationship of the coefficient a with respect to the thermal conductive properties of the thermal conductive sheet. Appeal Br. 2--4. Appellant argues the secondary references do not cure this deficiency. Appeal Br. 4--5. It is the Examiner's position that the coefficient C disclosed in Kadouchi is a metric for the cooling performance of the system, and therefore, the detecting unit of Kadouchi is capable of being programmed to relate the variation of the coefficient C to the thermal conductive properties of the film (the film that is incorporated into Kadouchi based upon the proposed combination). Ans. 3-5. In specific response to Appellant's aforementioned argument, it is the Examiner's position that it would have been expected that variations in the value of C of Kanouchi would be interpreted differently in the liquid-cooled system of Kadouchi as modified by Bitsche and Wegner than in the air-cooled system of Kadouchi. Ans. 12. It thus appears the Examiner correlates the value of C of Kanouchi with Appellant's claimed value of a when Kanouchi is modified as proposed by the Examiner. In reply, Appellant states, inter alia, that: the behavior of the coefficient C when the abnormality of the circulating system of the cooling system is occurring in Kadouchi is opposite to the behavior of the coefficient a when the deterioration of the thermal conductive sheet is occurring in the present invention. Accordingly, it would have been difficult for one of ordinary skill in the art to have adapted the judgment for the abnormality of the circulating system of the cooling medium disclosed in Kadouchi to the judgment for the thermal conductive properties of thermal passage between the secondary battery and the cooling medium. Since Kadouchi only discloses judging when an abnormality of the circulating system of the cooling medium occurs but does not teach or 4 Appeal2014-008041 Application 13/076,556 suggest determmmg a change in the thermal passage between the secondary battery and the cooling medium, it would not have been obvious to obtain the judgment for the thermal conductive properties of the members disposed between the secondary battery and the cooling medium, based upon the disclosures of Kadouchi. Reply Br. 2. We are persuaded by Appellant's argument. While it is the Examiner's position that the detecting unit of Kadouchi is capable of being programmed to relate the variation of the coefficient C to the thermal conductive properties of the film of the proposed combination because variations in the value of C of Kanouchi would have been recognized as being interpreted differently in the liquid-cooled system of Kadouchi as modified, the record is not clear regarding exactly how the variations in the value of C of Kanouchi would have been recognized and implemented in the proposed modification of Kadouchi. Also, the record is not clear as to how such a recognition would have been suggested by the applied art. 3 The Examiner makes a correlation between Kadouchi's C and Appellant's claimed a (Ans. 4, 12), but, we agree with Appellant that the record does not show how to implement the adaptation of this correlation and does not suggest to implement it. That is, as Appellant points out, none of the applied references determine a change in the thermal passage between the secondary battery and the cooling medium as claimed by Appellant. Appeal Br. 2-5. Reply Br. 2-3. 3 Paragraphs [0039]-[0042] of Appellant's Specification, for example, describe the method of judging deterioration of cooling performance and the associated relationship of a. 5 Appeal2014-008041 Application 13/076,556 We are thus persuaded by Appellant's arguments in the record that the applied art falls short of suggesting a judging unit programmed to detect a change of the thermal conductive properties of members arranged between the secondary battery and the cooling medium, as recited in Appellant's claims. In view of the above, we reverse Rejection 2. Because the Examiner does not rely upon the other applied references in Rejection 3 to cure the stated deficiencies of Kanouchi, we also reverse Rejection 3. DECISION Rejection 1 is affirmed. Rejections 2 and 3 are reversed. TIME PERIOD No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). § 1.136(a). ORDER AFFIRMED-IN-PART 6 Copy with citationCopy as parenthetical citation